Six Deep Takes on AI and More, From a Top Life Sciences Patent Litigator

If you could ask Quinn Emanuel partner Sandy Haberny a question or two about law and the life sciences, you’d learn a lot about that increasingly complex and combative frontier.

So the Berkeley Life Sciences Law & Policy Center, greedily, asked her six.

In their fast-paced Q&A, Dr. Haberny offers brief but cutting-edge perspectives on the trend of treating artificial intelligence as prior art, the latest vibes from the U.S. Patent and Trademark Office, and the Supreme Court decision that looms over every case she takes.

As a molecular pharmacologist who became one of the nation’s top life sciences patent litigators, she also reflects on how her labors at the bench inform her work at the bar, and how the law makes her think about science.

Asked to identify an under-appreciated idea in life sciences at the moment, Dr. Haberny doesn’t hesitate: It’s that treatment of AI as prior art – the full body of existing patents, products and other knowledge, which can preclude the granting of a patent.

“There’s almost no case law addressing it and thought leaders are scattered across every possible position on whether AI-generated publications should count as prior art at all,” she tells the Berkeley Center. Meanwhile, she says, various groups are “actively generating AI-written prior art for the express purpose of flooding the field and preventing patents from issuing.”

She warns that it’s an effort to “nuke the patent system.”

Dr. Haberny has the ideal experience to tackle these issues. She has litigated, advised clients, and tried cases on a range of complex technologies, including molecular diagnostics in the cancer, transplant, and prenatal fields, DNA sequencing, CRISPR therapies, and many more. Recently she’s been writing regularly on AI as prior art, including on how life sciences companies can best protect and monetize their AI-driven innovations.

And that Scotus decision she lives with – and leverages – on almost every life sciences case she tries?

That would be Mayo v. Prometheus, because it gave rise to Alice v. CLS Bank. There, the high court – weighing Section 101 of the Patent Act, which defines what subject matter is eligible for patenting – held that natural phenomena and abstract ideas can’t be patented, jeopardizing a host of diagnostic and software patents. Dr. Haberny says the way she thinks about Section 101 depends on which side she’s on.

“When I’m representing a plaintiff, the first thing I weigh before filing a complaint is which patents to assert – and the controlling factor isn’t even prior art so much as Section 101 vulnerability,” she says. “When I’m on the defense side, the first thing I do on validity is ask how I can take the patent down under Section 101.”

Read the full Q&A here.